Case IPR2016-00820
`U.S. Patent No. 7,064,197
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`HOLOGIC, INC., and BECTON, DICKINSON AND COMPANY,
`Petitioner
`
`
`v.
`
`
`ENZO LIFE SCIENCES, INC.,
`Patent Owner
`
`__________________
`
`
`Case IPR2016-00820
`
`U.S. Patent No. 7,064,197
`TITLE: SYSTEM, ARRAY AND NON-POROUS SOLID SUPPORT
`COMPRISING FIXED OR IMMOBILIZED NUCLEIC ACIDS
`Issue Date: June 20, 2006
`
`______________
`
`
`
`
`ENZO’S NOTICE OF APPEAL
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`U.S. Patent No. 7,064,197
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`HOLOGIC, INC., and BECTON, DICKINSON AND COMPANY,
`Petitioner
`
`
`v.
`
`
`ENZO LIFE SCIENCES, INC.,
`Patent Owner
`
`__________________
`
`
`Case IPR2016-00820
`
`U.S. Patent No. 7,064,197
`TITLE: SYSTEM, ARRAY AND NON-POROUS SOLID SUPPORT
`COMPRISING FIXED OR IMMOBILIZED NUCLEIC ACIDS
`Issue Date: June 20, 2006
`
`______________
`
`
`
`
`ENZO’S NOTICE OF APPEAL
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Case IPR2016-00820
`U.S. Patent No. 7,064,197
`
`
`
`Pursuant to 35 U.S.C. §§ 141, 142, and 319, and in accordance with 37
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`C.F.R. §§ 90.2-90.3, Patent Owner Enzo Life Sciences (“Enzo”) appeals to the
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`United States Court of Appeals for the Federal Circuit from the Final Written
`
`Decision of the Patent Trial and Appeal Board (“Board”) entered on September 28,
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`2017 in Case IPR2016-00820 (Paper 52) (“Final Written Decision”), and from all
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`underlying findings, determinations, rulings, opinions, orders, and decisions
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`regarding that inter partes review of U.S. Patent No. 7,064,197 (“the ’197 patent”).
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`This Notice of Appeal is timely filed within 63 days of the Final Written Decision.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Enzo states that the issues on
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`appeal may include, but are not limited to: the Board’s determination that Claims
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`1, 6, 8, 9, 12–16, 27, 32–34, 41, 61–63, 69, 70, 72–74, 79, 100, 191, 193, 194, 212,
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`213, 219, 222, 225–227, 230, 233, and 236 of the ’197 patent are unpatentable as
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`anticipated by Fish; the Board’s determination that Claims 31, 64, 68, 101, 192,
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`and 195 of the ’197 patent are unpatentable as obvious over Fish; the Board’s
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`determination that Claims 38, 78, and 218 of the ’197 patent are unpatentable as
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`obvious over Fish and Gilham; the Board’s determination that Claims 1, 6, 8, 9,
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`12–15, 27, 31, 32, 34, 61–63, 68–70, 72, 74, 79, 100, 191–193, 194, 213, 219, 226,
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`227, and 236 of the ’197 patent are unpatentable as anticipated by VPK; whether
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`VPK is prior art to the ’197 patent; the Board’s determination that Claims 33, 41,
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`73, 212, 225, and 233 of the ’197 patent are unpatentable as obvious over VPK and
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`1
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`
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`Case IPR2016-00820
`U.S. Patent No. 7,064,197
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`Metzgar; the Board’s determination that Claims 16, 38, 64, 78, 101, 195, 218, 222,
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`and 230 of the ’197 patent are unpatentable as obvious over VPK, Noyes, and
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`Ramachandran; the Board’s construction of Claims 1, 6, 8, 9, 12–16, 27, 31–34,
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`38, 41, 61–64, 68–70, 72–74, 78, 79, 100, 101, 191–195, 212, 213, 218, 219, 222,
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`225–227, 230, 233, and 236 of the ’197 patent, including its construction of the
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`claim terms “hybridizable form,” “via amine(s), hydroxyl(s), or epoxide(s),” and
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`“nucleic acid of interest;” the Board’s consideration of the expert testimony, prior
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`art, and other evidence in the record; the Board’s factual findings, conclusions of
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`law, or other determinations supporting or related to those issues, as well as all
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`other issues decided adversely to Enzo in any orders, decisions, rulings, and
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`opinions; whether inter partes review is unconstitutional because it permits an
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`executive agency to exercise the judicial power of the United States in violation of
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`Article III of the Constitution; whether inter partes review is unconstitutional
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`because Enzo has the right to a trial by jury on the validity of the ’197 patent under
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`the Seventh Amendment; and whether inter partes review is unconstitutional as
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`applied to the ’197 patent because the enactment of the inter partes review statutes
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`retroactively impaired Enzo’s vested rights in the ’197 patent, which rights vested
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`when the ’197 patent issued in 2006.
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`This Notice of Appeal is being e-filed with the Clerk’s Office for the United
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`States Court of Appeals for the Federal Circuit, along with payment of the required
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`2
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`Case IPR2016-00820
`U.S. Patent No. 7,064,197
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`
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`docketing fees. In addition, a copy of this Notice of Appeal is being filed
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`simultaneously with the Patent Trial and Appeal Board and with the Director of the
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`United States Patent and Trademark Office.
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`Dated: November 29, 2017
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`Respectfully submitted,
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`kmcnish@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: 212-351-3400
`Facsimile: 212-351-3401
`
`Lead Counsel for Patent Owner
`Enzo Life Sciences, Inc.
`
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`3
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`Case IPR2016-00820
`U.S. Patent No. 7,064,197
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`CERTIFICATE OF FILING
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`The undersigned certifies that on November 29, 2017, in addition to filing
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`the foregoing electronically through PTAB E2E, a copy of this Notice of Appeal
`was deposited with Priority Mail Express on November 29, 2017 for filing with the
`Director of the United States Patent and Trademark Office, at the following
`address:
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`
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`
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`The undersigned also certifies that on November 29, 2017, a copy of this
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`Notice of Appeal was filed electronically through the United States Court of
`Appeals for the Federal Circuit’s CM/ECF system.
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`Dated: November 29, 2017
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`Office of the Solicitor
`United States Patent and Trademark Office
`Mail Stop 8
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`Respectfully submitted,
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`kmcnish@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: 212-351-3400
`Facsimile: 212-351-3401
`
`Lead Counsel for Patent Owner
`Enzo Life Sciences, Inc.
`
`
`
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`Case IPR2016-00820
`U.S. Patent No. 7,064,197
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`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on November
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`29, 2017, a complete copy of the foregoing was served on counsel of record for all
`parties by filing this document through PTAB E2E and by sending this document
`via electronic mail to the following addresses:
`
`For Petitioner Hologic:
`
`M. Paul Barker (Reg. No. 32,013)
`paul.barker@finnegan.com
`
`Arpita Bhattacharyya (Reg. No. 63,681)
`arpita.bhattacharyya@finnegan.com
`
`Thomas L. Irving (Reg. No. 28,619)
`tom.irving@finnegan.com
`
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`Dated: November 29, 2017
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`For Petitioner BD:
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`Jamie T. Wisz (Reg. No. 58,429)
`Jamie.Wisz@WilmerHale.com
`
`Heather Petruzzi (Reg. No. 71,720)
`Heather.Petruzzi@WilmerHale.com
`
`Nancy Lynn Schroeder
`75,538)
`Nancy.Schroeder@WilmerHale.com
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`Respectfully submitted,
`
`(Reg. No.
`
`
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`kmcnish@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: 212-351-3400
`Facsimile: 212-351-3401
`
`Lead Counsel for Patent Owner
`Enzo Life Sciences, Inc.
`
`
`
`
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